copyright infringement

— Jessica Gutierrez Alm, Attorney

No one does the Carlton quite like Carlton Banks.  (Queue Tom Jones’s It’s Not Unusual.)  Since actor Alfonso Ribeiro first performed the unique dance on The Fresh Prince of Bel-Air, it has been readily associated with him.  When the dance move recently appeared as a purchasable avatar dance in the popular video game, Fortnite, players quickly recognized Carlton’s signature move.

 

Fortnite is a battle royale-style combat game in which players, through their avatars, fight to the finish.  In-game purchases allow players to download character skins, clothing, and emotes (dances) for their avatars to perform on the battlefield.  In January 2018, the makers of Fortnite introduced a new emote available for purchase: a Carlton-esque dance called the Fresh.  When a player purchases and downloads the Fresh emote, the player’s avatar can perform the dance move on command.

Ribeiro filed suit against Fortnite creator, Epic Games, last month in a California federal district court.  The suit has been widely reported as a copyright case, prompting many to analyze whether short dance moves like the Carlton are eligible for copyright protections.  Their collective answer: probably not.

Copyright Choreography

While choreographic works are eligible for copyright, the US Copyright Office states that it will not register for copyright “short dance routines consisting of only a few movement or steps with minor linear or spatial variations, even if a routine is novel or distinctive.”  Individual steps or movements, such as the Waltz step, hustle step and grapevine are not copyrightable, according to the Copyright Office’s guidance in Circular 52.  Social dances are similarly not eligible for copyright registration.  “[U]ncopyrightable social dances are generally intended to be performed by members of the public for the enjoyment of the dancers themselves,” as opposed to registrable choreographic works, which are “intended to be executed by skilled performers before an audience.”  At most, it is unclear whether the Carlton is complex enough, or includes enough movements or length, to be eligible for copyright protections.  Of course even if the Carlton dance is copyrightable, NBC Productions might have something to say about ownership of the copyright.

But Ribeiro’s suit against the makers of Fortnite alleges more than mere copyright infringement.  In addition, Ribeiro is suing Epic Games for violation of his statutory and common law right of publicity.

Vanna White-bot, Here’s Johnny Toilets, and the Right of Publicity

In general, the right of publicity protects an individual’s right to control the commercial use of her name and likeness.  In California, courts have defined a broad right of publicity.

Federal courts have determined that the California common law right of publicity is not strictly limited to an individual’s name and likeness.  In White v. Samsung Electronics, Vanna White sued Samsung for its depiction of a robot adorned with blond wig, gown, and jewelry in a VCR ad.  971 F.2d 1395 (9th Cir. 1992).  The familiar robot was posed next to a gameshow letter board reminiscent of the Wheel of Fortune.  The caption read, “Longest-running game show. 2012 A.D.”  Notably, the case is from 1992, and the ad was part of a campaign depicting use of various Samsung products in a futuristic setting.  Recognizing that although the defendants did not actually use White’s name or image, the court determined that the ad was clearly intended to depict White and presented colorable right of publicity claim.

In another case, the Ninth Circuit held that Ford Motor’s use of a Bette Midler sound-alike voice was a violation of Midler’s right of publicity, even without any use of Midler’s name or image.  Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).  And in Carson v. Here’s Johnny Portable Toilets, the Sixth Circuit held that the defendant’s use of the phrase “Here’s Johnny” to market portable toilets was a misappropriation of Carson’s persona.  810 F.2nd 104 (6th Cir. 1987)

In light of this precedent, Ribeiro’s right of publicity claims seem stronger than his copyright claims.  The complaint also includes claims under the Lanham Act and California statutes for unfair competition.  Ribeiro alleges that the company’s use of the dance move creates a false impression that either Epic Games created the dance move or that Ribeiro provided sponsorship.

What are your thoughts on these unfair competition claims?   Are they stronger than the copyright infringement claims?

The Vanna White case also included a Lanham Act unfair competition claim.  The court in that case recognized a celebrity’s ability to bring such claims to protect her persona.  The court permitted the Lanham Act claim to proceed to a jury along with White’s right of publicity claim.  Ultimately, the jury found for White and awarded over $400,000.

Others Join the Fight

Ribeiro is not the only artist to challenge Epic Games on the IP battlefield.  Rapper 2 Milly (Terrance Ferguson) sued Epic Games for creating an emote based on his Milly Rock dance.  And most recently, Backpack Kid (Russell Horning) sued Epic Games for introducing an emote modeled after his viral Floss dance.  Both complaints include claims for copyright infringement, violation of right of publicity, and unfair competition claims.

Video games offer a melting pot of intellectual property: trademark law, copyright law, and even patent law all come together in a delicious mix of intangible property. However, not all video game franchises are equal. Few can claim the same level of longevity, success, and nostalgia as Nintendo’s Mario Brothers series.

Among the most popular titles of the franchise is Mario Kart, a game in which characters from the franchise race each other in go karts. The characters repeat catch phrases, seek out power ups (invincibility, speed, etc.) and cartoonish weapons (banana peels, turtle shells, etc.), all with the singular goal of being atop the podium at the end of race. Over its 25+ years of existence, the game has resulted in significant sales, widespread nostalgia, and, unsurprisingly, numerous attempts from others trying to make money off of the characters. But a recent lawsuit in Japan brought media exposure to what might have been the greatest attempt yet to profit off the franchise: real life go-karting in Mario Brothers costumes in the streets of Tokyo.

How fun is that? From what I can tell, riders aren’t allowed to throw things at each other (thanks a lot, safety laws), but this tour would still be great. The attraction even attracted professional race car drivers. You don’t even need to provide your own costume, they’ve got a ton for you to choose from.

Race car drivers weren’t the only people to discover the tour. Nintendo’s lawyers did, too. I’d like to imagine they participated at least once before suing them, if only under the pretense of “fact development.” Nintendo sued and ultimately prevailed on claims of copyright infringement. The company has to pay Nintendo 10 million yen (about US$89,000) and can no longer hand out Mario Brothers character costumes.

It’s hard to quibble with Nintendo’s actions here. The MariCar company intentionally distributed character costumes in order to attract customers.

But what are Mario Kart fans supposed to do now? Well, there will be an official Super Nintendo World opening at Universal Studios Japan ahead of the 2020 Tokyo Olympics. The theme park will include a Super Mario World featuring Bowser’s castle, Peach’s Castle, and, yes, a “Mario Kart attraction.”

But if you prefer the thrill of participating in likely infringing activities, you can check out the Australia-based MUSHROOM RALLY race event purportedly coming to Denver, soon. Participants will have a chance to battle it out in Las Vegas for the championship race. Ticket prices are yet to be determined and are limited to just 600 participants. I suggest you read the fine print on the refund policy though – just a hunch…

— Jessica Gutierrez Alm, Attorney

 

Earlier this month, the United States Postal Service (USPS) was ordered to pay $3.5 million in damages to a sculptor for copyright infringement.

Seeking a unique redesign for its “Forever” stamps, the USPS searched stock photos for images of the Statue of Liberty.  They found a particularly striking photo on Getty Images and paid $1,500 for a license.  Between 2010 and 2014, the USPS produced and sold 4.9 billion Forever stamps featuring the Statue of Liberty photo obtained through Getty Images.  There was only one problem—this was not the Statue of Liberty.  Instead, the photo was of the Lady Liberty replica statue displayed in front of the New York-New York Hotel & Casino in Las Vegas.  The differences may be subtle, but on a side-by-side comparison, the distinction becomes clear.

On close inspection, you can even see the small plaque affixed to the crown of the Las Vegas statue.  “This one’s for you, mom”–the sculptor’s dedication to his mother-in-law.

The USPS discovered the mix-up in 2011 after only a few months of production.  They stated that they still would have selected the image had they known it depicted the Las Vegas statue, and continued producing the stamps.  Robert Davidson is the sculptor of the Las Vegas replica statue.  Recognizing that the USPS was profiting from his original work of art, Davidson sued the USPS for copyright infringement.

After a two-week bench trial, the court found in favor of Davidson.  The $3.5 million damages amount was calculated as a 5% royalty on the USPS’s profits on the stamp.

 

How can someone claim copyright on a replica of a famous statue?

The short answer is: it’s not an exact replica.  As the court in this case explained, “a work of art need not be wholly original to be copyrightable.”  Rather “it need only be a new and original expression of some previous work or idea.”  The standard for obtaining any copyright protection is relatively low.  To demonstrate that Davidson’s statue is eligible for copyright protection, he need only show a “modicum of creativity.”  In a 1991 case, the Supreme Court described the level of creativity required as “extremely low” and stated that “even a slight amount will suffice.”  Feist Publ’ns, Inc. v. Rural Tel Serv. Co., 499 U.S. 340, 345 (1991).  In addition, to obtain protection for his sculpture, Davidson needed to show some nontrivial variation from the New York statue that distinguishes it in some meaningful way.

The court found that Davidson met this burden.  The court seemed particularly persuaded by Davidson’s testimony that he sought to give his sculpture a more “feminine” and “fresh” face, as compared with the “harsher” and “more masculine” look of the original.  Questions about the application of societal beauty standards to the Statue of Liberty aside, the court determined that the softened jaw line, rounded face, and modified eyes and lips were sufficient for copyright protection in the derivative work.

 

Since the USPS obtained rights to the image through Getty Images and paid a licensing fee, how was this an infringement?

This was my first question when I learned the USPS paid a licensing fee for the photo.  However, it turns out the photo itself was an infringing work.  According to Davidson’s complaint, the photographer took the photo and posted it for sale on Getty Images without Davidson’s permission.  Thus although USPS paid a licensing fee to the photographer, the license was still based on use of an infringing, unauthorized work.  Continued sale and distribution of the photograph, whether by the photographer or USPS, constituted additional infringement.

 

Isn’t this protected fair use?

The USPS raised the issue of fair use as a defense to the infringement.  Fair use does not have a clear-cut definition.  In determining whether an otherwise infringing use constitutes fair use, courts look to four factors: (1) The purpose and character of the use; (2) The nature of the copyrighted work; (3) The amount of the copyrighted work that was used; and (4) The effect of the use on the author’s market.  The USPS’s argument for fair use relied in part on its low profit margin on the stamps and a lack of any harm to Davidson’s ability to capitalize on the sculpture.  The court sided with Davidson.  As the court explained, although the profit margin for individual stamps was low, the USPS collected over $70 million in pure profit from the stamps.  The court also noted that the USPS never offered a public attribution or apology to Davidson.

 

Shouldn’t the sculptor have sued the photographer instead of the USPS?

It seems Davidson had options here.  Both the photographer and the USPS unlawfully used Davidson’s work.  The photographer produced and sold a derivative work (the photo) based on the original copyrighted work (the sculpture).  The USPS then reproduced and sold the same infringing photo.  Both the photographer and USPS used, and profited from, Davidson’s underlying original work.  It is likely that Davidson also could have sued Getty Images for displaying and licensing the infringing work.  It seems Davidson probably made the strategic decision to sue the U.S. government, rather than the photographer or Getty, as the potential for damages was considerably higher.

A few months ago, a federal district court in New York held that several publishers violated a photographer’s copyright when they embedded a photograph from one of the photographer’s Twitter posts. Goldman v. Breitbart News Network, No. 17-CV-3144 (KBF) (S.D.N.Y. Feb. 15, 2018). The photographer, Justin Goldman, had sued Breitbart News Network, TIME Inc., The Boston Globe and other online publishers last year for copyright infringement, alleging they displayed in various online news stories, without permission, a photograph he took of New England Patriots quarterback Tom Brady, which he had posted on Twitter.

In their defense, the publishers invoked the “Server Test,” based on the prominent Ninth Circuit decision, Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), which held that the unauthorized display of Google Image search engine results, of photographs stored on third-party servers, did not constitute copyright infringement, provided that such images were not hosted on Google’s servers. Essentially, the Server Test provides that website publishers are not liable for copyright infringement if they embed content hosted on third-party servers, but not their own servers.

But in the Goldman case, the New York court (under the jurisdiction of the Second Circuit), questioned the validity of the Ninth Circuit rule, because the court concluded that the Copyright Act does not require physical possession of the copyrighted material. The court relied on Supreme Court precedent supporting that merely transmitting copyrighted material can constitute infringement, regardless of “invisible” technical distinctions regarding the means of the infringing display or distribution, see American Broadcasting Co.s, Inc. v. Aereo, Inc., 134 S. Ct. 2498 (2014). Therefore, the court declined to apply the Server Test, and concluded that the publisher defendants “violated plaintiff’s exclusive display right [and] the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.”

Furthermore, the court emphasized a “critical” distinction with Perfect 10 regarding the “paramount” role of the user. The web users in Perfect 10 were required to click on the thumbnail images in the Google Image search, in order to see the full-size images hosted on third-party servers. By contrast, in the Goldman case, visitors to the defendants’ websites would immediately see the full-size image, without any volitional act of clicking to connect to a third-party server.

On March 19, the district court granted the publisher defendants’ motion to certify the decision for interlocutory appeal to the Second Circuit, acknowledging the parties’ representations that the decision created “uncertainty for online publishers” with a significant “impact beyond this case” due to the popularity of Twitter and “retweeting.” Some commentators, such as the Electronic Frontier Foundation, suggest that the Goldman decision threatens in-line linking and, if followed by other courts, could require monumental changes to online news publishing. One amicus brief in the New York case also predicted that the Goldman ruling will “transform the internet as we know it.” While some of these gloomy predictions may be overstated based on a single district court decision, the appeal to the Second Circuit will certainly be closely watched, so stay tuned for updates.

 

— Jessica Gutierrez Alm, Attorney

For anyone unfamiliar with internet cat personalities, Grumpy Cat is a well-known feline whose dwarfism and underbite culminate in a perpetual—and adorable—sour expression.  Grumpy Cat’s real name is Tardar Sauce.  In 2012, when Tardar Sauce was only a few months old, she became an internet sensation after a photo of her endearing scowl was posted on Reddit.  Since that time, Tardar Sauce has made several public appearances, and was named to Forbes’ list of Top Pet Influencers.

Tardar Sauce’s owner, Tabatha Bundesen, formed Grumpy Cat Limited to handle licensing and merchandising of the Grumpy Cat brand.  Grumpy Cat Limited holds eight federal trademark registrations, including five registrations for the standard character mark GRUMPY CAT, and three registrations for this design mark:

Grumpy Cat Limited also owns multiple copyright registrations, including these:

 

In 2013, Grumpy Cat Limited entered into a licensing agreement with Grenade Beverage LLC.  Under the agreement, Grumpy Cat Limited licensed the Grumpy Cat trademarks and copyrights to Grenade in connection with a line of iced coffee products (appropriately named Grumppuccinos).

Three flavors of Grumppuccino

The licensing agreement additionally permitted Grenade to develop other Grumpy Cat beverage products, but only with the permission of Grumpy Cat Limited for each new product.  Under this provision, Grenade sought approval from Grumpy Cat Limited for a new line of Grumpy Cat-branded coffee beans.  Grumpy Cat Limited withheld approval for the coffee beans.  Grenade nonetheless moved forward with the new product.  Grenade also began selling unauthorized Grumppuccino t-shirts.

The offending beans

In late 2015, Grumpy Cat Limited sued Grenade for breach of contract, copyright infringement, and trademark infringement.  Namely, Grumpy Cat Limited asserted that Grenade’s use of the Grumpy Cat name and likeness on the coffee bean products and unauthorized Grumppuccino t-shirts was outside the permissible scope of the licensing agreement.

After a week-long trial, during which Tardar Sauce herself made an appearance, a jury decided in favor of Grumpy Cat Limited.  The jury awarded $710,001 to Grumpy Cat Limited: $230,000 in statutory damages for copyright infringement, $480,000 in statutory damages for trademark infringement, and $1 for breach of contract.  Presumably, the statutory damages awarded to Grumpy Cat Limited equal more than any actual damages the company could have obtained–a reminder of the value of statutory damages in trademark and copyright infringement suits.

Moving along from Steve’s post on our alma mater of the University of Iowa, a former Rutgers football player has a more negative view of his former school. A few years ago, the Rutgers football program started allowing position groups to choose a nickname. The wide receivers are known as “Flight Crew,” the defensive linemen as “Rude Boyz,” and the offensive line was formerly known as “Soul Train.” Apparently the steam ran out though and the group chose a new name this year: “Rare Breed.” The players and the coaches use the name in social media like Facebook and Twitter. While Wild Turkey appears unconcerned, the new moniker has ruffled the feathers of John Ciurciu, a former Rutgers fullback who has now filed a trademark infringement complaint in the New Jersey U.S. District Court.

Ciurciu founded Rare Breed after he moved on from his playing career. According to the complaint, the company sells a variety of clothing and football gear, becoming popular among high school, college and professional football players. The complaint counts Adrian Peterson and Brian Cushing among NFL players that wear the brand. The company also designs custom apparel for student athletes at Coastal Carolina College. The company owns registered trademarks for the RARE BREED mark in standard character form as well as part of a design mark. The registered design mark is shown below on the left, and the image displayed on Rutgers social media on the right.

The complaint alleges that the use of the image above as well as the use of the hashtags in social media are all instances of trademark infringement and unfair competition. Rare Breed had earlier sent cease and desist letters to Rutgers. The university’s attorney responded by stating that the coaches had been directed to remove the images and hashtags from their social media. While some of the images were removed, some remained. Rare Breed sent a second letter and again the university’s attorney stated that the coach had been directed to remove the use.

It is worth noting that Rutgers has not sold any goods with the image above. However it seems that Rare Breed is concerned that players, especially recruits, might mistakenly believe that the team is sponsored by Rare Breed. The concern seems plausible, even if Rare Breed doesn’t have the same widespread recognition as bigger companies like Adidas or Nike. While we have to wait and see whether Rare Breed can prevail on its claims, one thing is certain. In the age of recruiting via social media, counsel for colleges and universities should discuss intellectual property and other social media issues with their football programs. The Rare Breed – Rutgers dispute is an excellent Exhibit #1. Without proper guidance, lawsuits like this will be anything but rare.

This is the question being presented in a lawsuit pending in the Southern District of New York against the iconic band U2 and a majority of its band mates.  Paul David Hewson (more well known as lead singer Bono), David Howell Evans (more well known as guitarist extraordinaire the Edge), drummer Laurence Joseph Mullen Jr., and bassist Adam Clayton were all named as defendants in the Amended Complaint filed by British recording artist Paul Rose (“Rose”) in June of this year.  He contends that U2’s The Fly from the 1991 Atchung Baby album ripped off his musical composition Nae Slappin.

Atchung Baby and Nae Slappin
Atchung Baby and Nae Slappin

Rose contends he dropped off a demo tape at Island Records.  U2 recorded at Island Records and allegedly listened to the demo tape.  Both Rose and U2 were often in the Island Records offices.   Rose claims that the renowned guitarist The Edge changed his approach to guitar playing after hearing Rose’s work.

Rose claims that the lyrics of The Fly concede that U2’s new musical sound and direction was not really new.  As the great Bono sings:  “Every artist is a cannibal, every poet is a thief.”  Rose contends that this rings true with U2.

In its recently filed motion to dismiss, the iconic band argues that Nae Slappin is a different animal than The Fly.   Rose’s “Nae Slappin is essentially an extended guitar solo consisting mostly of multiple guitar tracks, with percussion accompaniment.”  “There are no vocals, no lyrics, no subject, and no theme.”  It is experimental and acts as a vehicle for Mr. Rose to showcase his guitar skills.  In stark contrast, U2’s The Fly is a “‘song’ in the true sense of the word, with everything that comes with it:  vocals, lyrics, a subject and a theme.”  “‘The Fly’ is a direct reference to ‘The Metamorphosis’ by Frank Kafka, in which the protagonist changes overnight from a travelling salesman to a giant insect, or fly.”   I must admit I did not like the movie with Jeff Goldblum and Geena Davis that is based on Kafke’s novella.  However, it looks like I was in the minority as Rotten Tomatoes shows a 91% rating by critics and 83% rating by audiences.  I might have to re-watch the movie now that I am an adult.  But, I digress.

While writing this blog post, I watched an old YouTube video of U2’s song for the first time.  See below.

I liked the song (and the video).                

The standard for determining copyright infringement is whether the “total concept and overall feel” are the same.  U2 alleges that the two works: The Fly and Nae Slappin do not meet this standard.  The band accuses Rose of parsing the two works. For example, he points to a 7-second clip from Nae Slappin and a 12-second clip from the band’s The Fly.  Rose also asserts claims about the “percussion” or a “beat” that the band claims is inappropriate.   Relying on previous case law, U2 asserts that the beats alone “are too common of a musical technique to be protectable.”  Further, U2 complains that there cannot be protectable expression in a “chord change” from “E7 to A7.”        

U2 asserts that “musical ideas” are not protectable—only “artistic impressions.”  Accordingly, U2 contends that Rose’s Amended Complaint should be dismissed.

U2 also argues that Rose waited too long to bring this lawsuit.  He waited 25 years.  We will have to see how Rose counteracts this argument.  In his Amended Complaint, Rose asserts that he has a “witness who had provided the Rose demo tape to the Island Records executives,” who had only come forth recently because she was previously concerned about losing her job.  This may be a reason Rose will assert that he waited.

Rose asserts an equitable claim for right of attribution and writing credit for The Fly.  U2 contends that this claim is really a claim for ownership of the copyright which is barred by the three-year statute of limitations.  This is different than laches (you waited too long).  Rather, a statute of limitations cuts off your right to make a claim (except if there are tolling arguments, fraud or the like).

Will U2 prevail on its motion? Will U2 play The Fly when the iconic band comes to Minneapolis to play at the US Bank stadium in September?

CR Poster

At some point in this digital age, almost every individual or business in the creative space will discover that somebody has copied them. You may see it yourself, or you may get the stomach-dropping “Doesn’t this look an awful lot like…..” e-mail from a friend. It might be that potential client who said your design “was nice, but wasn’t for us.” It could be a big company with a new shirt/container/advertisement with a strikingly similar photograph. It could be a blog post that . . ., well, you get the idea. When you discover that someone copied something that you created, there are a lot of questions and it’s rarely as simple as “someone copied my stuff!” So here are a few things to consider as you decide on next steps.

First, does your work qualify for copyright protection? Any one who creates an original, creative work of authorship has a valid copyright interest as soon as the work is fixed in a tangible medium of expression. The bar for what is “creative enough” to qualify is low. Very low. Even the mere selection, arrangement, and display of facts in a graph or a telephone book may qualify as a creative work of authorship.  However, there are some limitations. Copyright law only protects the expression of an idea, not the idea itself. So while a cookbook focused on chicken sandwiches would be protected, the underlying recipe (and sandwich) is not. Also, words and short phrases like book or movie tittles are not protected by copyright. But yes, the image you grabbed from a Google image search through likely is.

However, as long as you meet have a modicum of creativity, and as long as you didn’t copy someone else’s expression, you likely have a valid copyright. This is true even if you haven’t registered your copyright with the Copyright Office. However, a registration (or pending application to register) is generally a prerequisite for bringing a lawsuit, and can open up additional types of relief if the infringement occurred after the registration of the copyright.

Second, are you the owner of the work? Generally, the author is the owner, unless ownership has been transferred. For businesses, if an employee created the work within the scope of their employment, then the employer is likely the author. The work for hire doctrine can be tricky, so it is best to drill down and confirm ownership before asserting any claim of infringement. If you’re not the author, you may be able to contact the former employee, contractor, etc. and obtain an assignment of the copyright interest.

Third, is the “infringer” really infringing? Copyright law only protects the expression of a work, not the idea of a work. The James Bond franchise has a number of valuable copyright protected works: books, movies, characters, etc. While there are broad rights associated with the franchise, the copyright does not give the owner the ability to claim rights in the idea of a British secret agent. The tough part is locating the fine line between idea and expression. There also a question of  whether the “infringer” is making a legitimate “fair use” of the copyright work. Is the copy part of a social commentary on a relevant issue or topic, like gender stereotypes? Could creation of an online repository of shared links, images, and articles a la Pinterest qualify as a fair use? These are important questions to consider when deciding whether to pursue any further action.

Finally, what are your options? You could start with a short email or phone call. Third-parties may not realize something is protected. The “infringer” may happily stop selling/posting/distributing the copied work. An attorney can assist, providing you with talking points, ghost writing a letter, or if you prefer contact the alleged infringer directly. If the copy is on the internet, there is likely a method for you to request that the website/app/hosting service remove access to the infringing work through a Notice of Claimed Infringement. YouTube, Facebook, eBay, and others all have online submission forms. Be aware, however, making wholly unreasonable claims of infringement could lead to the alleged infringer turning the tables.  Of course, a lawsuit is an (expensive) option but as noted above, a registration or pending application is necessary to bring  a lawsuit. If the work has value (economic or personal), you should consider applying to register the copyright to at least expand your response options, and your potential recovery.

Creative individuals and companies put a lot of time, effort, and money to create something that is valuable to them. When you discover that someone took a shortcut at your expensive, it can be personally offensive and you want to make it stop, now. The law provides an avenue for relief, but unfortunately it often may not provide you with the scope of protection you thought you had. So if you or a client runs across a copycat, hit the pause button. Someone may have “copied your stuff,” but they may not have committed copyright infringement.

— Jessica Gutierrez Alm, Attorney

Fanfiction refers to the art of creating fiction using another author’s characters or universe.  I was first introduced to the concept in high school, when a friend began writing Harry Potter fanfiction.  (Side note: this is not one of those situations where the “friend” is actually me.)  My friend used the same well-known characters—Harry, Hermione, Ron, etc.—and details of the world created by J.K. Rowling, including Hogwarts, muggles, the Ministry of Magic, and Diagon Alley, to create an otherwise original plot.

Fanfiction is typically shared among fellow enthusiasts, and rarely results in publication, movie deals, or notable profits.  For this reason, intellectual property rights are often not enforced against fanfiction creators, which has led many to mistakenly believe that fanfiction is a categorically protected use.

While IP rights holders typically tolerate—and even encourage—fanfiction, one recent fan-sourced plotline caught the attention of CBS and Paramount.  In 2014, Axanar Productions launched a crowdfunding campaign to produce a “feature-quality Star Trek film,” entitled “Axanar.”  The campaign raised over $1 million through combined Kickstarter and Indiegogo campaigns.  To promote the campaign, Axanar Productions released a 20-minute preview entitled “Prelude to Axanar.”  And it’s awesome.

Whether it was the impressive production value, the appearance of actor Richard Hatch from Battlestar Galactica, or the overwhelmingly successful crowdfunding campaign, Axanar Productions caught the attention of the makers of Star Trek.

In late 2015, CBS and Paramount sued Axanar Productions for copyright infringement.  The amended complaint, summarized here by Ars Technica, alleges 57 instances of copyright infringement divided into categories, including characters, races, costumes, settings, logos, plot points, dialogue, and theme.  It’s pretty clear that both the Prelude to Axanar, and the planned Axanar film, are intentionally based on the Star Trek universe and incorporate at least some copyrightable Star Trek elements.

Axanar takes place 20 years prior to the start of the Star Trek Original Series (i.e., the William Shatner series).  At least one episode of the Original Series includes characters discussing the “Battle of Axanar,” in which Garth of Izar was a heroic victor.  According to the Kickstarter campaign, “Axanar tells the story of Garth and his crew during the Four Years War, the war with the Klingon Empire that almost tore the Federation apart.  Garth’s victory at Axanar solidified the Federation and allowed it to become the entity we know in Kirk’s time.”  The preview, Prelude to Axanar, is a documentary-style telling of the Axanar battle by the characters themselves, including Garth of Izar.

Axanar Productions appears to be relying primarily on a defense of fair use.  The fair use defense considers four factors in determining whether a work that technically infringes a copyright is excused nonetheless.  The factors include: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copyrighted work used; and (4) the effect of the use on the potential market for the copyrighted work.  Some recognized forms of fair use are parody, criticism, and journalism.  While perhaps not a parody or criticism, fanfiction does seem potentially defensible under fair use, due at least to the transformative nature of the work.  That is, Axanar Productions does not seek to supplant the existing Star Trek films, books or television series, but rather to create an entirely new work with their own creative process.

A California federal district court disagreed with Axanar Productions’s fair use defense.  Ruling on motions for summary judgment earlier this month, a federal judge concluded that Axanar and Prelude to Axanar are not protected under fair use.  The court found all factors of the fair use analysis weighed in favor of CBS and Paramount.  Regarding the effect on the plaintiffs’ market, the court held that the Axanar films take the place of stories that the plaintiffs might want to create in the future or might want to license.  As David Post Points out in the Volokh Conspiracy, this results in somewhat circular reasoning—albeit reasoning supported by precedent.  Because others would be willing to pay a licensing fee to make these works, they’re not fair use.  But suggesting that others would be willing to pay a licensing fee presumes that the works are not fair use to begin with.  The case is set to begin trial on January 31st to decide the issues of “substantial similarity” between the works and willful infringement.

What do you think? Is fanfiction permissible fair use?  Should it be?  Is this another situation where a culture of information sharing and technology is at odds with antiquated IP laws?  (See Napster.)  Does it depend on profit?  (Axanar Productions maintains that it is a nonprofit organization.)  Does it depend on the funding and/or sophistication of the infringer?  And in that vein, who qualifies as a “fan?”  If Disney were to create Axanar, would that be fair use?

Notably, CBS and Paramount recently released some “Fan Films” guidelines, promising not to enforce their IP if their very specific guidelines are followed.

 

— Jessica Gutierrez Alm, Attorney

Have you ever seen an ad for something and thought to yourself, “Hey, I had that idea years ago!” Some people take that thought a step further. One Florida man claims to have invented the iPhone in 1992, and is suing Apple to the tune of over $10 billion.

Thomas Ross filed a patent application for an “Electronic Reading Device” having a backlit LCD screen in 1992. Below are some images from Ross’s original filing, as presented in his Complaint against Apple.

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The application was ultimately abandoned in 1995 for failure to pay required fees. Ross therefore does not hold a patent on his invention. A patent application alone, without a resulting issued patent, does not itself grant any actionable rights. Even if Apple did copy the disclosed design in Ross’s patent application, he would not have a cause of action for patent infringement based on his abandoned application.

Since Ross cannot sue for patent infringement, he instead appears to hang his case entirely on copyright infringement. In 2014, Ross registered the drawings and text from his abandoned patent application for copyright protection. Importantly, copyright protection attaches to a work when it is initially “fixed” or written. Therefore, any copyright rights that Ross holds in the drawings and text originated when he initially wrote them in 1992.

However, copyright and patent are two very different animals. Copyright protects creative works, such as literary, musical, dramatic, pictoral, graphic, and sculptural works. Copyright protection is not available for ideas, facts, or utilitarian aspects of an item. Ross’s copyright rights cannot protect the workings of an iPhone-like device itself. Copyright is not a substitute for a failure to obtain patent protection.

While Ross may have a valid copyright in the shape and other creative physical aspects of his Electronic Reading Device, an allegation of copyright infringement requires proof of actual copying.   That is, a plaintiff must show that the defendant actually copied the plaintiff’s copyrighted work, which may be shown by access to the plaintiff’s work and similarity between the works. This is required because copyright law does not protect against independent creation. If two people separately create the same glass vase or write the same poem, entirely independent of one another, they may both hold a copyright for the work. Ross does not appear to provide any evidence toward proving that Apple actually copied his works.

Based on the facts presented in Ross’s Complaint, he is unlikely to succeed in the copyright allegations.  The text of Ross’s 1992 patent application reveals what was likely an innovative design. He describes the device “greatly improve[ing] ready access to reading material without the traditional inconvenience of bulk associated with accessibility of large amounts of printed text, and bundled in a light, compact and easily portable device that would additionally function as a note-book (optionally), calendar, clock, timer, calculator, factsimile [sic] devices, cellular phone, [and] message handler.” Surely an innovative concept in 1992. Unfortunately, an idea itself, no matter how revolutionary, is not protectable intellectual property. Ross’s failure to obtain patent protection for his invention has led to a lack of enforceable rights.